Facebook, Inc.

Patent Trials and Appeals Board

Mar 12, 2020

13758553 - (D) (P.T.A.B. Mar. 12, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/758,553 02/04/2013 Yigal Dan Rubinstein 26295-21134/US 6569
87851 7590 03/12/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/12/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YIGAL DAN RUBINSTEIN,
YANXIN SHI, and JOHN HEGEMAN

Appeal 2019-000471
Application 13/758,553
Technology Center 3600
____________

Before ANTON W. FETTING, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Facebook,
Inc. Appeal Br. 2.
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ILLUSTRATIVE CLAIM
1. A computer-implemented method comprising:
receiving a request for content from a viewing user of a
social networking system;
receiving a plurality of candidate recommendation units
for the viewing user, each candidate recommendation unit
including a recommendation that the viewing user perform an
action in the social networking system identified by the
recommendation unit;
determining a plurality of bid amounts for each candidate
recommendation unit, each bid amount associated with a goal
of the social networking system and based on a value to the
goal of the viewing user performing the action identified by the
candidate recommendation unit, wherein the plurality of bid
amounts for at least one candidate recommendation unit is
associated with a plurality of different goals of the social
networking system;
determining a combined bid amount for each candidate
recommendation unit based on the plurality of bid amounts
associated with a candidate recommendation unit;
determining an expected value for each candidate
recommendation unit based on the combined bid amount
associated with the candidate recommendation unit;
ranking the candidate recommendation units using the
expected value;
selecting content for presentation to the viewing user
including a recommendation unit selected from the candidate
recommendation units based at least in part on the ranking; and
sending the selected content for display to the viewing
user.
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REJECTION2
Claims 1–20 are rejected under 35 U.S.C. § 101 as ineligible subject
matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building

2 The Final Office Action (pages 3–18) included rejections under 35 U.S.C.
§ 103(a). These rejections are withdrawn. See Answer 4–5.
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blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88–89 (2012) (internal quotation marks omitted)).
The first step determines whether the claim is directed to judicially excluded
subject matter (such as a so-called “abstract idea”); the second step
determines whether there are any “additional elements” recited in the claim
that (either individually or as an “ordered combination”) amount to
“significantly more” than the identified judicially excepted subject matter
itself. Id. at 217–18.
In 2019, the USPTO published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”). Under the 2019 Revised Guidance, a claim is
“directed to” an abstract idea, only if the claim recites any of (1)
mathematical concepts, (2) certain methods of organizing human activity,
and (3) mental processes — without integrating such abstract idea into a
“practical application,” i.e., without “apply[ing], rely[ing] on, or us[ing] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Id. at 52–55. The considerations
articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim
element (or combination of elements) integrates an abstract idea into a
practical application. Id. at 55. A claim that is “directed to” an abstract idea
constitutes ineligible subject matter, unless the claim recites an additional
element (or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
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Although created “[i]n accordance with judicial precedent” (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court’s Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of § 101. Id. at 53–54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited; Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54–55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element (or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
Claims 1–20 are argued as a group. Appeal Br. 6–16. Claim 1 is
selected for analysis herein. See 37 C.F.R. § 41.37(c)(1)(iv).
With respect to Step 1 of the 2019 Revised Guidance, there is no
dispute that the claims are within identified categories of § 101.
In relation to the inquiry of Step 2A, Prong One, the Examiner states:
“Claims 1–20 are directed to displaying content to user based on bids and
ranks of the recommendation units.” Final Action 2. According to the
Examiner, the identified concept “is considered an idea of itself, which is
merely an abstract idea” and it “is similar to the concepts of collecting and
comparing known information, which have all been found by the courts to be
abstract.” Id. Further, the Examiner states:
The claimed concept is also considered a fundamental
economic activity which is merely an abstract idea. The
concept of directed to displaying content to user based on bids
and ranks of the recommendation units is a well-known and
conventional step in the advertising field and therefore the
abstract idea is deemed fundamental in this field.
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Id. at 3.
This latter categorization of the Examiner squares with the approach
of the 2019 Revised Guidance. Except for the recitations of “computer-
implement[ation]” and “sending the selected content for display to the
viewing user,” the limitations of independent claim 1, for example, recite a
technique for determining what content is provided to social network users,
based upon various marketing goals and strategies of the social networking
system. As the Specification explains, the bids may be allocated according
to strategies for accomplishing particular goals — such as increasing the
number of users. Spec. ¶ 27. Thus, the technique of claim 1 is among the
“[c]ertain methods of organizing human activity,” particularly “commercial
or legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; [and]
business relations).” 2019 Revised Guidance, 84 Fed. Reg. at 52. Further,
the claimed features are similar to forms of targeted advertising, which
courts have regarded as a type of abstract idea. See Affinity Labs of Tex.,
LLC v. Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (“tailoring
of content based on information about the user — such as where the user
lives or what time of day the user views the content — is an abstract idea
that is as old as providing different newspaper inserts for different
neighborhoods”) (citing Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)).
The Appellant disputes the Examiner’s categorization of the claimed
subject matter as a fundamental economic practice (a type of the ineligible
methods of organizing human activity), asserting that “claim 1 does not
describe agreements between people in the form of contracts, legal
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obligations, or business relations” and that “it is not possible that this
concept could be a fundamental economic practice or even a process [that]
had been heard of before outside of the Appellant’s system,” because
“recommendation units did not exist prior to the advent of social networking
systems like Facebook.” Appeal Br. 9.
To the contrary, the identified concept of “displaying content to user
based on bids and ranks of the recommendation units” (Final Action 2) is
similar to basic marketing practices, as discussed above. Moreover, even if
the particular implementation in a computer-network environment were a
more recent development, as the Appellant contends, this would not
undermine the Examiner’s determination that the identified concept, free of
such computer-network features, could be regarded properly as an abstract
idea.
Therefore, we are not persuaded of error, as to the Examiner’s
analysis corresponding to Step 2A, Prong One.
Turning to Step 2A, Prong Two, unless a claim that recites a judicial
exception (such as an abstract idea) “integrates the recited judicial exception
into a practical application of that exception,” the claim is “directed to” the
judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 53. The
analysis of such an “integration into a practical application” involves
“[i]dentifying . . . any additional elements recited in the claim beyond the
judicial exception(s)” and “evaluating those additional elements individually
and in combination to determine whether they integrate the exception into a
practical application.” Id. at 54–55. Among the considerations “indicative
that an additional element (or combination of elements) may have integrated
the exception into a practical application” is whether “[a]n additional
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element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” Id. at 55 (footnote
omitted). “[W]hether an additional element or combination of elements
integrate[s] the exception into a practical application should be evaluated on
the claim as a whole.” Id. at 55 n.24.
In regard to issues pertaining to Step 2A, Prong Two, the Appellant
contends that “the claimed invention is directed to a specific implementation
of a solution to a problem in the software arts”:
Taking claim 1 as an example, claim 1 provides a unique
method of selecting content for presentation to a viewing user.
The content includes a recommendation unit selected from a
plurality of candidate recommendation units. Each candidate
recommendation unit is associated with a plurality of bid
amounts. The bid amounts for each candidate recommendation
unit are associated with a plurality of different goals of the
social networking system. The different goals of the social
networking system include use growth, user retention, user
engagement, and page promotion. See [Spec.] FIG. 2; claim 14
(referring to goals). Accordingly, content including a
recommendation unit that can recommend and identify an
action valuable to the social networking system is selected and
presented. See [Spec.] FIG. 3.
Appeal Br. 10. Further, the Appellant contends that the claimed subject
matter “improves the computer of the social networking system in its ability
to achieve its goals through allowing it to perform a unique bidding process
to selectively present content to its users.” Id. at 10–11. In addition,
comparing the claims in the Appeal to those in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the Appellant contends
that “the claimed invention here specifically arises in the realm of the
Internet” and “these methods are not possible outside the Internet
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environment,” such that “the claimed invention is rooted in computer
technology to overcome a problem (how [to] select the right content to
achieve different goals of a social networking system)” — an outcome that
the Appellant calls “[a]n unconventional desired result (presenting content
that triggers user actions valuable to the goals of the social networking
system).” Id. at 11–12.
These arguments are not persuasive, at least because the alleged
improvement stems from features describing the identified judicial
exception, as opposed to any additional elements. See 2019 Revised
Guidance, 84 Fed. Reg. at 54–55.
Moreover, the Appellant does not adequately show how the claimed
subject matter could be rooted in computer technology, in the manner of
DDR Holdings. The claims at issue in DDR Holdings did not use a
computer network in its normal, expected manner by sending a website
visitor to a third-party website connected with a selected advertisement.
DDR Holdings, 773 F.3d at 1258–59. Instead, the claims “specif[ied] how
interactions with the Internet are manipulated” in order to “override[ ] the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink.” Id. at 1258. Here, we find no technological improvement in
Appellant’s claim 1 comparable to changing the routine, conventional
functioning of Internet hyperlink protocol. Critically, the Appellant
identifies no obstacle created by the use of a computer network environment,
which the claimed subject matter might overcome. See id. at 1257–58.
Rather, the technique of the Appellant’s claims “qualifies as an ‘abstract
idea’ for which computers are invoked merely as a tool.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
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Nor are we persuaded by the Appellant’s position that the claims do
not monopolize the identified abstract concept. See Appeal Br. 12. The
preemption/monopolization concerns of subject-matter eligibility are
addressed through the approach that the Supreme Court described in, e.g.,
Alice. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) (“[Q]uestions on preemption are inherent in and resolved by
the § 101 analysis.”) “While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Therefore, we are not persuaded of error in the rejection, with regard
to analyses corresponding to Step 2A, Prong Two.
Under Step 2B of the 2019 Revised Guidance (84 Fed. Reg. at 56), a
claim that recites a judicial exception (such as an abstract idea) might,
nevertheless, be patent-eligible, if the claim contains “additional elements
amount[ing] to significantly more than the exception itself” — i.e., “a
specific limitation or combination of limitations that [is] not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present.” See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”)
Referring to BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), the Appellant argues
that claim 1 provides an unconventional and non-generic arrangement of
elements, thus amounting to significantly more than the identified judicial
exception, by
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selectively presenting content to a viewing user based on values
of the viewing user’s action recommended and identified by
recommendation units included in the content. As a whole,
amended claim 1 recites a “specific, discrete implementation”
of receiving candidate recommendation units (each can
recommend the viewing user perform an action and identify
that action), determining a plurality of bid amounts for each
candidate recommendation unit based on value of the viewing
user performing the recommended action, determining a
combined bid amount for each candidate recommendation unit,
determining an expected value of each candidate
recommendation unit, ranking the candidate recommendation
units, selecting content including a candidate recommendation
unit selected based on the ranking, and sending the selected
content for display to the viewing user.
Appeal Br. 15–16. See also Reply Br. 5–6.
Yet, as noted above, the referenced claim limitations are part of the
judicial exception at issue in this Appeal. As such, these limitations cannot
impart patent-eligibility to the claims. “It has been clear since Alice that a
claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018). The same is true of the Appellant’s
additional argument regarding independent claim 14 (see Appeal Br. 15),
wherein the features of “aggregating . . . the bid contributions associated
with each goal” and “determining the combined bid amount for the
recommendation unit based on the aggregated bid contributions,” are part of
the Examiner’s identified abstract idea. Accordingly, we are not persuaded
of error in the rejection, with regard to the inquiries corresponding to Step
2B.
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Therefore, we are not persuaded of error in the rejection, such that we
sustain the rejection of claims 1–20 under 35 U.S.C. § 101.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED